ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 978 Tech N. V. v. Ethan chen and Ranada Prasad Ray Case No. D2024-1268 1. The Parties The Complainant is 978 Tech N. V., Netherlands (Kingdom of the), represented by Justec Legal Advisory Services LLC, United States of America (“United States”). The Respondents are Ethan chen, Singapore and Ranada Prasad Ray. 2. The Domain Name and Registrar The disputed domain name <2xbet.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2024. On March 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2024, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 28, 2024, the Respondent Ethan chen sent an email communication to the Center. The Complainant filed an amendment to the Complaint, and the Respondent Ethan chen sent another email communication on March 29, 2024. A third party also sent email communications to the Center on March 29, March 30, and April 2, 2024. On April 2 and April 4, 2024, the Respondent Ethan chen sent further email communications to the Center. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent (comprising both the Registrar-disclosed Respondent, Ethan chen, and the third-party referred to above, identified as Ranada Prasad Ray) of the Complaint, and the proceedings commenced on April 4, 2024. In accordance
page 2 with the Rules, paragraph 5, the due date for Response was April 24, 2024. On April 26, 2024, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Steven A. Maier as the sole panelist in this matter on May 10, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Identity of Respondent As discussed in section 4.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the identification of the appropriate respondent in any particular case is a matter for discretion of the panel. In this case, the Respondent originally named in the Complaint, being a proxy service, the Registrar made timely disclosure of the details of the underlying registrant of the disputed domain name, namely the Respondent Ethan chen. It is well-established in jurisprudence under the UDRP that in such circumstances, unless there is some exceptional reason to the contrary, the registrar-disclosed respondent may stand as the respondent in place of the relevant proxy service. A further consideration in this case, however, is that in the various emails sent to the Center by the Respondent and third-party referred to in section 3 above, the Respondent Ethan chen asserts that he sold the disputed domain name on October 29, 2023 to the third party in question, Ranada Prasad Ray. Moreover, that individual confirms that he is the owner of the disputed domain name. However, neither of the parties exhibits evidence of the relevant transfer of the disputed domain name and, furthermore, it is clear that no such transfer was notified to the Registrar. In cases where the registrar-disclosed respondent provides particulars of another party, which it claims to be the beneficial holder of the disputed domain name, the panel may determine that the registrar-disclosed respondent, the newly disclosed beneficial holder, or both, are the proper respondents in the case. In this case, the Panel sees no reason why the Registrar-disclosed registrant should be removed as a Respondent in the case, since that Party has provided no evidence of the claimed transfer, and remains on the register as the registrant of the disputed domain name and therefore responsible for its use. However, since both the Registrar-disclosed Respondent and the supposed beneficial holder assert that the latter is the present owner of the disputed domain name, the Panel considers it appropriate that Ranada Prasad Ray should also be added as a Respondent in the proceeding. The Respondents Ethan chen and Ranada Prasad Ray shall be referred to collectively as the Respondents in the remainder of this Decision accordingly. The Panel notes at this point that both the Respondents received the Notification of Complaint, Complaint and Annexes from the Center and were afforded the full 20-day period to file a Response. 5. Factual Background The Complainant operates an online gambling site at “www.8xbet.com”. It claims to have used the name and trademark 8XBET in commerce since January 1, 2022, and that it is now Asia’s largest betting site and one of the world’s leading online gambling sites. The Complainant sponsors the soccer team Manchester City FC, which competes in the English Premier League. The Complainant does not claim to have obtained any registered trademark rights in the mark 8XBET, but exhibits evidence of two applications for United States trademarks, for a word mark 8XBET and a figurative mark 8XBET, both filed on May 16, 2023.
page 3 The Complainant’s website features an 8XBET logo, comprising a distinctive design in light and dark blue colours (the “Complainant’s Logo”). The Complainant’s Logo is also the subject of its figurative trademark application referred to above. The Panel having independently reviewed the Manchester City FC official website, it is clear that Manchester City identifies 8XBET as its official betting partner in Asia.1 The website features the Complainant’s Logo in conjunction with the Manchester City logo and incudes an image of three Manchester City players. The Panel also finds that the Complainant’s sponsorship of Manchester City FC was announced on or around July 5, 2022. The disputed domain name was first registered on March 25, 2014. The Respondent Ethan chen states that he purchased the disputed domain name on May 6, 2023, and sold it to the Respondent Ranada Prasad Ray on October 29, 2023. The disputed domain name has resolved to a website of which the Complainant exhibits a single-page image in .png format. The Complainant states that the image was obtained on March 15, 2024. The webpage prominently features a “2XBET” logo that is highly similar in appearance to the Complainant’s Logo. The left hand side of the webpage appears to be in the Vietnamese language, but no translation is provided by the Complainant. The right hand side of the webpage is headed “MANCHESTER CITY F.C.” and includes an image of three Manchester City players wearing what appear to be sponsored jerseys bearing the legend “2XBET”. The image is similar to that which appears on the Manchester City website as mentioned above. 6. Parties’ Contentions A. Complainant The Complainant submits that the mark 8XBET has become a distinctive identifier of its services by virtue of the Complainant operating Asia’s largest betting site under that name and its sponsorship of Manchester City FC. The Complainant submits that the disputed domain name is confusingly similar to its trademark 8XBET. While it concedes that the disputed domain name adopts the number “2” in place of the number “8”, it contends that it is the “xbet” part of the disputed domain name that is distinctive and confusingly similar to its trademark. It further submits that the Respondents’ use of the disputed domain name for a misleading website should be taken into account as affirming the similarity between the disputed domain name and the 8XBET trademark. The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondents and has never authorized them to use its 8XBET trademark, that the Respondents have not commonly been known by the disputed domain name and that the Respondents are making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that, on the contrary, the Respondents are using the disputed domain name deceptively to take unfair advantage of the 8XBET trademark by misrepresenting some official connection with the Complainant, its trademark and services. The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It asserts that the Respondents’ acquisition of the disputed domain name occurred shortly after the announcement of the Complainant’s sponsorship of Manchester City. It asserts that the disputed domain 1WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8, provides: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.”
page 4 name is misleading in itself, and further that the Respondents’ website uses its 8XBET trademark, content from its own website and a false association with Manchester City to misrepresent some legitimate connection with the Complainant. The Complainant asserts that the Respondents’ website offers gambling services in competition with its own (although it provides no evidence in support of this) and that the Respondents are using the disputed domain name to attract Internet users to their website for commercial gain by fraudulently representing a connection with the Complainant. The Complainant adds that the Respondents’ website provides no information by which the Respondents can be identified, and submits that it has twice previously been the victim of similar, Viet Nam-based, infringement of its rights, as found by UDRP panels in 978 Tech N.V. v. Quoc Sam Lam, WIPO Case No. D2023-4809 and 978 Tech N.V. v. seo Senh Sam, WIPO Case No. D2023-4092. B. Respondents The Respondents did not file a formal Response to the Complainant’s contentions. In his informal emails to the Center referred to above, the Respondent Ethan chen asserts that he is no longer the owner of the disputed domain name and that the Complaint is not properly directed to him. In his email dated April 2, 2024, the Respondent Ranada Prasad Ray states: “I would like to know more about the details of domain name infringement, could you please inform me… If we know the details of the infringement, we will make adjustments and improvements in accordance with laws and regulations.” 7. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has no existing registered trademark rights in the mark 8XBET, and the fact of its pending application for such a trademark or trademarks does not of itself confer rights for the purposes of the UDRP. However, the Panel is satisfied on the evidence available to it that the Complainant operates a substantial online betting site in Asia in particular, and has established a well-publicized sponsorship of Manchester City FC, being a prestigious and internationally-known sports team. The Panel finds, therefore, that for the purposes of the Policy the Complainant has obtained a sufficient degree of consumer recognition of its distinctive mark 8XBET to invest it with common law rights in that mark in the nature of unregistered trademark rights. The disputed domain name is identical to the Complainant’s trademark 8XBET but for the substitution of the initial number “8” with a “2”. That substitution does not in the view of the Panel prevent the Complainant’s trademark from being recognizable within the disputed domain name. Furthermore, the Panel agrees with the Complainant’s submission that this is a case in which examination of the Respondents’ website, which plainly misrepresents a connection with the Complainant, affirms the issue of confusing similarity (see e.g. section 1.7 of WIPO Overview 3.0). The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
page 5 B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Respondents have failed to file a formal Response in this proceeding and have not submitted any explanation for their registration and use of the disputed domain name, or evidence of rights or legitimate interests on their part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. On the contrary, the Respondent Ranada Prasad Ray requests further details of the “infringement” in question and undertakes to “make adjustments and improvements in accordance with laws and regulations”. However, no further communications were received from either Respondent following the Center’s formal commencement of the proceeding, providing both with copies of the Complaint. The Panel determining further that the Respondents have used the disputed domain name for the purpose of a misleading website which seeks to target the Complainant’s goodwill in its 8XBET trademark, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith While the disputed domain name was first registered in 2014, the Panel finds, on the basis of the statement by the Respondent Ethan chen, that the Respondents acquired it on May 6, 2023. The Panel also infers, on the basis of the available evidence and in the absence of any contradiction by the Respondents, that the Respondents registered the disputed domain name with knowledge of the Complainant’s 8XBET trademark and activities and with the intention of benefitting unfairly from the goodwill attaching to that trademark. The Panel accepts the Complainant’s submission that the disputed domain name is inherently misleading, as being likely to confuse Internet users into believing that it is owned or operated by, or otherwise legitimately connected with, the Complainant. The Panel finds the Respondents’ website to be clearly and obviously deceptive in nature. The website makes prominent use of a “2XBET” logo which is plainly designed to mimic the Complainant’s Logo. It also features “MANCHESTER CITY F.C.”, with which the Respondents have no apparent connection, as well as an image of three Manchester City players wearing “2XBET” jerseys, which is similar to Manchester City’s own image used in connection with the Complainant’s sponsorship of that club. While the nature of the Respondent’s website offering is not apparent to the Panel, the Panel does not consider it to be material whether or not this comprises online gambling services as the Complainant contends. The Panel finds in any event that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <2xbet.com> be transferred to the Complainant. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: May 28, 2024
Full & Egal Universal Law Academy